Case 5:05-cv-00334-RMW Document 2058 Filed 08/18/2008 Page 1 of 13

1
2
E-filed: 8/18/2008
3
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5
IN THE UNITED STATES DISTRICT COURT
6 FOR THE NORTHERN DISTRICT OF CALIFORNIA
7 SAN JOSE DIVISION
8
RAMBUS INC., No. C-05-02298 RMW
9
Plaintiff, PUBLIC REDACTED ORDER DENYING
10 RAMBUS' MOTION FOR SUMMARY
v. JUDGMENT ON THE JEDEC CLAIM IN
11 COUNT VII OF SAMSUNG'S
United States District Court

SAMSUNG ELECTRONICS CO., LTD., COUNTERCLAIMS

SAMSUNG ELECTRONICS AMERICA,
For the Northern District of California

12
INC., SAMSUNG SEMICONDUCTOR, INC., [Re Docket No. 284]
13 SAMSUNG AUSTIN SEMICONDUCTOR,
L.P., [PUBLIC REDACTED VERSION]
14
Defendants.
15
16 RAMBUS INC., No. C-05-00334 RMW
17 Plaintiff,
[Re Docket No. 427]
18 v.
19 HYNIX SEMICONDUCTOR INC., HYNIX
SEMICONDUCTOR AMERICA INC.,
20 HYNIX SEMICONDUCTOR
MANUFACTURING AMERICA INC.,
21
SAMSUNG ELECTRONICS CO., LTD.,
22 SAMSUNG ELECTRONICS AMERICA,
INC., SAMSUNG SEMICONDUCTOR, INC.,
23 SAMSUNG AUSTIN SEMICONDUCTOR,
L.P.,
24
NANYA TECHNOLOGY CORPORATION,
25 NANYA TECHNOLOGY CORPORATION
U.S.A.,
26
Defendants.
27
28 PUBLIC REDACTED ORDER DENYING RAMBUS' MOTION FOR SUMMARY JUDGMENT ON THE JEDEC CLAIM IN
COUNT VII OF SAMSUNG'S COUNTERCLAIMS
C-05-02298 RMW; C-05-00334 RMW
TSF
 Case 5:05-cv-00334-RMW Document 2058 Filed 08/18/2008 Page 2 of 13

1 Rambus moves for summary judgment with respect to Samsung's "JEDEC-related unfair
2 competition" counterclaim, arguing that Samsung released the claim when it entered a licensing
3 agreement with Rambus. In the alternative, Rambus argues that Samsung waived the claim when
4 the licensing agreement was renegotiated one year later. Samsung opposes the motion. The court
5 has reviewed the papers and considered the arguments of counsel. For the reasons set forth below,
6 the court denies Rambus's motion for partial summary judgment on Samsung's JEDEC-related unfair
7 competition claim.
8 I. BACKGROUND
9 Samsung's unfair competition claim at issue in this motion focuses on Rambus's activities
10 before JEDEC. As alleged by Samsung,
11 Rambus has engaged in at least the following unlawful, unfair, and anticompetitive
United States District Court

business practices, and deceptive conduct:

For the Northern District of California

12 ***
13 e. Unfair and anticompetitive business practices against DRAM manufacturers
as a member of JEDEC as evidenced by the following facts: During the 1990's,
14 Rambus participated actively in industry meetings on standards for SDRAMs and
DDR SDRAMs at the Joint Electron Device Engineering Council ("JEDEC").
15 Rambus improperly used information it obtained as a result of its membership in
JEDEC to secure additional patents and claims. Rambus's use of this information was
16 in violation of policies applicable to all JEDEC members. Rambus (sic) failure to
disclose to other members of JEDEC that it had taken information from JEDEC to
17 craft its patent claims, only to seek to enforce its claims against JEDEC-compliant
products many years after JEDEC members had invested heavily in the technology
18 without notice of Rambus's conduct. This conduct was unfair and anticompetitI've
to all DRAM manufacturers that were members of JEDEC, including Samsung.
19
Samsung's Second Amended Answer ¶ 259(e) (05-02298, Docket No. 87); Samsung's Second
20
Amended Answer ¶ 287(e) (05-00334, Docket No. 141) (identical allegation). Rambus moves for
21
partial summary judgment with respect to this allegation, arguing that any claim Samsung may have
22
had for unfair competition stemming from Rambus's JEDEC activities was released.
23
License negotiations between Rambus and Samsung culminated in a non-exclusive patent
24
license executed by Rambus on October 27, 2000 and by Samsung on October 31, 2000. See Gross.
25
Decl., Ex. D at 27. The license is titled "SDR/DDR IC AND SDR/DDR MEMORY MODULE
26
PATENT LICENSE AGREEMENT" ("Agreement") and authorized Samsung to make and sell
27
28 PUBLIC REDACTED ORDER DENYING RAMBUS' MOTION FOR SUMMARY JUDGMENT ON THE JEDEC CLAIM IN
COUNT VII OF SAMSUNG'S COUNTERCLAIMS
C-05-02298 RMW; C-05-00334 RMW
TSF 2
 Case 5:05-cv-00334-RMW Document 2058 Filed 08/18/2008 Page 3 of 13

1 SDRAM, DDR SDRAM, and controllers covered by various Rambus patents. See id. §§ 1.2, 2.2. In
2 its "whereas" clauses, the Agreement recited that Rambus owns various patents and that Samsung
3 wishes to license such patents. Id. at 1.
4 A number of provisions bear on the scope of the claims that Samsung released when it
5 entered into the Agreement. Section 2 is titled "Release, Grant, Covenants, & Limitations Thereon"
6 and contains the provisions at issue. It begins with a release by Rambus of any claims for "any and
7 all infringement of the Rambus Patents:"
8 Upon timely payment of the license fee of Section 3.1(a), Rambus hereby releases,
acquits and forever discharges Samsung and its subsidiaries from any and all claims
9 and/or liabilities for any and all infringement of the Rambus Patents, arising from
acts and/or events prior to the Effective Date hereof, provided such acts and/or
10 events fall within the license granted in Section 2.2 of this Agreement if such acts
and/or events occurred during the term of this Agreement. UPON THE ADVICE OF
11 LEGAL COUNSEL, RAMBUS AND ITS SUBSIDIARIES WAIVE AGAINST
United States District Court

SAMSUNG AND ITS SUBSIDIARIES, ALL RIGHTS UNDER CALIFORNIA

For the Northern District of California

12 CIVIL CODE SECTION 1542 AND ANY OTHER STATE OR FEDERAL

STATUTE OR COMMON LAW PRINCIPLE OF SIMILAR EFFECT.
13
Id. § 2.1. The Agreement then grants Samsung a license to some of Rambus's patents and defines
14
the contours of the license by explicitly excluding certain activities. See id. §§ 2.2-2.9.
15
Section 2.10 contains four disclaimers, specifying what the Agreement does not imply or
16
require. The fourth is relevant to this dispute. It provides that "[n]othing contained in this
17
Agreement shall be construed as: . . . (d) a waiver of equitable defenses (e.g., estoppel) by Samsung
18
relative to the Rambus Patents." Id. § 2.10(d).
19
The final two subsections of Section 2 address Samsung's covenants and releases of claims
20
against Rambus. First, "Samsung covenants not to sue Rambus or any of its Subsidiaries, anywhere
21
in the world, for any alleged induced and/or contributory infringement of any and all present or
22
future patents owned or controlled by Samsung or its Subsidiaries during the term of this
23
Agreement." Id. § 2.11. Second, Samsung granted the release which is the main focus of Rambus's
24
motion.
25
Samsung and its subsidiaries hereby release, acquit and forever discharge Rambus
26 and its subsidiaries from any and all claims and/or liabilities of any nature and kind,
whether known or unknown, as of the Effective Date, relating to or arising out of the
27 subject matter of this Agreement. UPON THE ADVICE OF LEGAL COUNSEL,
28 PUBLIC REDACTED ORDER DENYING RAMBUS' MOTION FOR SUMMARY JUDGMENT ON THE JEDEC CLAIM IN
COUNT VII OF SAMSUNG'S COUNTERCLAIMS
C-05-02298 RMW; C-05-00334 RMW
TSF 3
 Case 5:05-cv-00334-RMW Document 2058 Filed 08/18/2008 Page 4 of 13

1 SAMSUNG AND ITS SUBSIDIARIES WAIVE AGAINST RAMBUS AND ITS

SUBSIDIARIES, ALL RIGHTS UNDER CALIFORNIA CIVIL CODE SECTION
2 1542 AND ANY OTHER STATE OR FEDERAL STATUTE OR COMMON LAW
PRINCIPLE OF SIMILAR EFFECT.
3
Id. § 2.12.
4
Finally, the parties specified that the Agreement would be interpreted under California and
5
U.S. federal law. Id. ¶ 9.1. The Agreement concludes with an integration clause which provides
6
that the terms and conditions of the Agreement "constitute the entire agreement between the parties
7
and supersede all previous agreements and understandings, whether oral or written, between the
8
parties herein with respect to the subject matter hereof." Id. ¶ 10.14.
9
II. ANALYSIS
10
A. Partial Summary Judgment
11
United States District Court

Samsung initially argues that Rambus's summary judgment motion is "facially invalid"
For the Northern District of California

12
because it addresses only a portion of Samsung's unfair competition claim and not the entire claim.
13
Samsung submits that a court lacks the power to summarily adjudicate a "portion of a claim" or
14
"intermediate facts," but only "entire claims or defenses." Because Rambus' motion does not resolve
15
Samsung's four other allegations that comprise its unfair competition claim, Samsung contends that
16
Rambus' motion must fail.
17
Samsung's argument ignores the text of Rule 56(b) of the Federal Rules of Civil Procedure.
18
It provides that "[a] party against whom relief is sought may move at any time . . . for a summary on
19
all or part of the claim." Fed. R. Civ. P. 56(b) (emphasis added). Rule 56(d) further instructs the
20
court to narrow the issues for trial where summary judgment does not wholly dispose of a case.
21
Rule 56(b) clearly allows the court to enter partial summary judgment with respect to an issue. See,
22
e.g., First Nat. Ins. Co. v. F.D.I.C., 977 F. Supp. 1051, 1055 (S.D. Cal. 1997) ("[T]he Court may still
23
grant summary adjudication as to specific issues if it will narrow the issues for trial."); Baker v.
24
Norman, 651 F.2d 1107, 1123 (5th Cir. 1981) ("In cases that involve complicated fact patterns and
25
multiple causes of action, summary judgment may be proper as to some causes of action but not as
26
to others, or as to some issues but not as to others, or as to some parties but not as to others[.]").
27
28 PUBLIC REDACTED ORDER DENYING RAMBUS' MOTION FOR SUMMARY JUDGMENT ON THE JEDEC CLAIM IN
COUNT VII OF SAMSUNG'S COUNTERCLAIMS
C-05-02298 RMW; C-05-00334 RMW
TSF 4
 Case 5:05-cv-00334-RMW Document 2058 Filed 08/18/2008 Page 5 of 13

1 B. The Scope of the Release in the Agreement

2 Rambus argues that the release provision in Section 2.12 of the Agreement bars Samsung's
3 JEDEC claim because it "relat[es] to or aris[es] out of the subject matter" of the Agreement. The
4 parties do not dispute the effect of this provision; it is a general release that bars all claims that relate
5 to or arise out of the subject matter of this Agreement. Instead, the parties dispute the scope of this
6 limitation, i.e., does Samsung's JEDEC-related unfair competition claim "relate to or arise out of the
7 subject matter of this Agreement"?
8 1. "The Subject Matter of This Agreement"
9 First, the parties disagree about the "subject matter" of the Agreement. The license is styled
10 as a "Patent License Agreement" and the "whereas" clauses describe how Rambus owns various
11 patents and how Samsung wishes to license them. Samsung argues, however, that "[b]ecause the
United States District Court
For the Northern District of California

12 subject matter of the SDR/DDR License is clearly the licensing of certain Rambus patents to
13 Samsung, Samsung's release of claims relating to or arising out of' the subject matter of the
14 agreement only covers claims that relate to or arise out of Samsung's manufacture and sale of
15 memory products covered by the licensed patents (e.g. past infringement)." Opp'n at 9 (emphasis in
16 original).
17 The Agreement is not reasonably susceptible to Samsung's interpretation. Samsung's
18 argument that the "subject matter" of the Agreement is Samsung's manufacture and sale of the
19 licensed memory products makes little, if any, sense because that interpretation would essentially
20 render the release meaningless. Section 2.12 releases Samsung's claims against Rambus. But it is
21 difficult to imagine how Rambus could be liable to Samsung for any claim relating to or arising out
22 of Samsung's manufacture of the licensed products. Section 2.12 must be construed so as to have
23 some substantive value from Rambus's standpoint.
24 At the hearing on the motion, Samsung proffered a new explanation for the provision. It
25 pointed to the covenant in Section 2.11, in which Samsung promises not to sue Rambus for any
26 current or future contributory or induced infringement of any of Samsung's patents. Samsung then
27 argues that Section 2.12 is the counterpart to Section 2.11, and that the "subject matter of this
28 PUBLIC REDACTED ORDER DENYING RAMBUS' MOTION FOR SUMMARY JUDGMENT ON THE JEDEC CLAIM IN
COUNT VII OF SAMSUNG'S COUNTERCLAIMS
C-05-02298 RMW; C-05-00334 RMW
TSF 5
 Case 5:05-cv-00334-RMW Document 2058 Filed 08/18/2008 Page 6 of 13

1 Agreement" refers not to Rambus's patents, but to the possible secondary infringement liability
2 discussed in Section 2.11. Under this interpretation, the effect of Sections 2.11 and 2.12 is that
3 Samsung agrees not to sue Rambus for secondary infringement for the duration of the Agreement
4 and releases Rambus from any past secondary liability for patent infringement.
5 Samsung's interpretation of the relationship between Sections 2.11 and 2.12 has some
6 theoretical logic to it but does not compel the result Samsung desires. Section 2.11 does suggest that
7 the subject matter of the Agreement is not limited to Rambus's patents as contended by Rambus but
8 it does not limit Section 2.12 to releasing only claims for secondary infringement by Rambus of
9 Samsung's patents. Simply put, Section 2.11 is part of "this Agreement," but it is not the exclusive
10 whole of "this Agreement." If the parties intended such a narrow release, they could easily have said
11 that Samsung released any and all claims relating to or arising out of Section 2.11, or related to
United States District Court
For the Northern District of California

12 Samsung's patents, or related to Rambus's conduct in contributing to or inducing other parties'

13 infringement of Samsung's patents. But Samsung released claims related to "this Agreement" in its
14 entirety. This includes the Rambus patents licensed to Samsung which are at the heart of "this
15 Agreement."
16 2. "Relating To Or Arising Out Of"
17 Having determined that the "subject matter of this Agreement" encompasses Rambus's
18 patents, the court turns to the scope of the release related to the patents. In short, Rambus and
19 Samsung dispute the meaning of "relating to or arising out of" and whether Samsung's JEDEC claim
20 "relates to or arises out of" the Rambus Patents.
21 Rambus begins by citing multiple cases showing that this phrase is understood to be "broad"
22 and "expansive" when applied in the context of arbitration clauses, where it is standard,
23 recommended language. See Mediterranean Enterprises, Inc. v. Ssangyong Corp., 708 F.2d 1458,
24 1464 (9th Cir. 1983). In that context, a claim "relates to" certain subject matter if it "touches" the
25 subject matter. See Mitsubishi Motors Corp. v. Soler Chrysler-Plymouth, Inc., 473 U.S. 614, 625
26 n.13 (1985); Pennzoil Exploration and Production Co. v. Ramco Energy Ltd., 139 F.3d 1061, 1068
27 (5th Cir.1998). This broad interpretation of "relating to" stems, however, from the "strong federal
28 PUBLIC REDACTED ORDER DENYING RAMBUS' MOTION FOR SUMMARY JUDGMENT ON THE JEDEC CLAIM IN
COUNT VII OF SAMSUNG'S COUNTERCLAIMS
C-05-02298 RMW; C-05-00334 RMW
TSF 6
 Case 5:05-cv-00334-RMW Document 2058 Filed 08/18/2008 Page 7 of 13

1 policy in favor of arbitration." Pennzoil Exploration, 139 F.3d at 1068; see also Mitsubishi Motors,
2 473 U.S. at 625 n.13 ("[T]he Court of Appeals properly resolved any doubts in favor of
3 arbitrability."). None of Rambus' cases interpret the phrase in the context of a general release,
4 which, in contrast, should be construed narrowly because a release eliminates liability. See Sid
5 Richardson Carbon & Gasoline Co. v. Interenergy Resources, Ltd., 99 F.3d 746, 755 (5th Cir. 1996)
6 (applying Texas contract law); Williston on Contracts § 73.9 (4th ed. 2003). Because the clause at
7 issue is contained in a release and not in an arbitration agreement, the construction given its use in
8 arbitration agreements offers little guidance.
9 Nonetheless, the court agrees with Rambus that the "relating to or arising out of" language
10 creates a broader release than "arising out of" alone. Cf. Mediterranean Enterprises, 708 F.2d at
11 1464. Combined, the "relating to" and "arising out of" language demonstrate a clear intent to release
United States District Court
For the Northern District of California

12 all claims having anything to do with the licensing of the patents. Samsung maintains that claims
13 based on anything other than the parties' licensing relationship cannot "relat[e] to or aris[e] out of"
14 the subject matter of the license. Samsung points to the release used in Winet v. Price, which used
15 an "arising out of or in any manner connected with" formulation. 4 Cal. App. 4th 1159, 1163 (1992).
16 Based on that clause, Samsung argues that Rambus could have achieved the broad release it now
17 wants, but only if the release had read, "arising out of or in any manner connected with Rambus's
18 patents." The only difference then between Samsung's proffered language and the language used in
19 the license is the difference between "relating to" and "in any manner connected with." Samsung
20 does not explain how these two terms would differ in scope. Nor can the court discern what subset
21 of potential claims would be released by "arising out of or in any manner connected with" but not
22 released by "arising out of or relating to." General language cannot meaningfully bear so many fine
23 gradations. The two must therefore be interpreted similarly. The language of the release in Section
24 2.12 is as broad as the phrase "relating to or arising out of" suggests, and as broad as the Winet court
25 interpreted "arising out of or in any manner connected with" to be.
26 Section 2.10(d) strongly suggests that the parties considered claims relating to the
27 enforceability of Rambus's patents as "relating to or arising out of the subject matter of this
28 PUBLIC REDACTED ORDER DENYING RAMBUS' MOTION FOR SUMMARY JUDGMENT ON THE JEDEC CLAIM IN
COUNT VII OF SAMSUNG'S COUNTERCLAIMS
C-05-02298 RMW; C-05-00334 RMW
TSF 7
 Case 5:05-cv-00334-RMW Document 2058 Filed 08/18/2008 Page 8 of 13

1 Agreement." In Section 2.10(d) the parties expressly confirmed that the Agreement was not to be
2 construed to release Samsung's right to assert "equitable defenses (e.g. estoppel) . . . relative to the
3 Rambus Patents." If the release was not intended to cover claims related to the enforceability of
4 Rambus's patents, this provision would have been unnecessary. Had Samsung wished to preserve an
5 affirmative claim for events arising out of JEDEC, it could have done so, as it did with its equitable
6 defenses.
7 Samsung submits extrinsic evidence to try to demonstrate that the release is reasonably
8 susceptible to a narrower interpretation than that urged by Rambus. Some of the evidence is
9 irrelevant, but some of it is admissible and supports the conclusion that the parties did not intend by
10 their language for the release to be broad enough to cover an unfair competition claim based upon
11 Rambus's conduct before JEDEC.
United States District Court
For the Northern District of California

12 First, Samsung relies on affidavits executed on October 5, 2007 by two of its negotiators of
13 the Agreement, See Goldstein Decl., Exs. 5 at ¶¶ 4-7, 6 at ¶¶ 4-7. Paragraphs four to seven of the
14 two affidavits contain virtually identical "understandings" of the meaning of the license negotiated
15 almost seven years earlier. However, as Samsung explains in its briefing, "subjective,
16 uncommunicated intent is irrelevant to contract interpretation." See Opp'n at 21 (citing Yount v.
17 Acuff Rose-Opryland, 103 F.3d 830, 836 (9th Cir. 1996)); see also Winet, 4 Cal. App. 4th at 1167.
18 The substantially similar affidavits do not include any statement that Mr. Donohoe or Mr. Shim
19 shared these understandings with Rambus. Accordingly, the court cannot rely on them in construing
20 the scope of Samsung's release.
21 Samsung next proffers an October 16, 2000 email discussing a draft of the Agreement. The
22 draft included a provision barring Samsung from challenging the validity or enforceability of
23 Rambus's patents without first terminating the license. The email indicates that the parties deleted
24 the provision in favor of a provision allowing Samsung to terminate the license at any time and a
25 provision allowing Rambus to terminate the license if Samsung challenged the patents' validity or
26 enforceability. Samsung argues that the deleted provision sheds light on the meaning of the release
27 because the provision would have been "unnecessary" if through Section 2.12 Samsung had already
28 PUBLIC REDACTED ORDER DENYING RAMBUS' MOTION FOR SUMMARY JUDGMENT ON THE JEDEC CLAIM IN
COUNT VII OF SAMSUNG'S COUNTERCLAIMS
C-05-02298 RMW; C-05-00334 RMW
TSF 8
 Case 5:05-cv-00334-RMW Document 2058 Filed 08/18/2008 Page 9 of 13

1 released any claims asserting unenforceability or other relief based upon JEDEC conduct.
2 Therefore, Samsung submits that the language in Section 2.12 does not encompass its 17200 claim.
3 Although Rambus may ultimately establish that this parol evidence does not support Samsung's
4 position or is outweighed by other evidence, it is sufficient to raise a triable issue of fact regarding
5 the scope of Samsung's release.
6 Samsung also argues that Rambus's conduct during 2001 suggests that any JEDEC-related
7 unfair competition claim falls outside the release. California law allows subsequent acts of the
8 parties to a contract to help determine a contract's meaning. See Universal Sales Corp. v. California
9 Press Mfg. Co., 20 Cal. 2d 751, 761 (1942); 1 Witkin, Summary of California Law, Contracts § 749
10 (10th ed. 2005).1 Samsung asks the court to interpret the license's release in light of Rambus's
11 course of conduct "after information about Rambus's misconduct at JEDEC was brought to
United States District Court
For the Northern District of California

12 Samsung's attention in the course of the 2001 Infineon trial." Opp'n at 14. Samsung contends that
13 had Rambus believed that Section 2.12 released Rambus from any JEDEC-related unfair
14 competition claim, it surely would have raised that point during the 2001 renegotiation of the
15 Agreement. Rambus responds by pointing out that Rambus had an incentive to work with Samsung
16 to renegotiate the Agreement even though it, Rambus, believed that Section 2.12 barred Samsung
17 from bringing an affirmative unfair competition claim based upon Rambus's JEDEC conduct.
18 Although Rambus's explanation for its failure to raise the issue in the 2001 negotiations makes some
19 sense, the light that the evidence sheds on the intent of the parties at the time of the execution of the
20 Agreement is best left to the trier of fact.
21 Finally, Samsung argues that its unfair competition counterclaim does not fall within the
22 release in Section 2.12 because the "general release does not include or contemplate counterclaims."
23 This argument lacks merit. The release is broadly worded and sweeps in "any and all claims and/or
24 liabilities of any nature and kind." The Federal Rules of Civil Procedure clearly provide that a
25
1
26 This rule of construction limits consideration of subsequent conduct to that occurring
before there is controversy between the parties with regard to the contract. See id. However, neither
27 party raised the issue of whether that rule precludes consideration of the parties' renegotiation conduct.

28 PUBLIC REDACTED ORDER DENYING RAMBUS' MOTION FOR SUMMARY JUDGMENT ON THE JEDEC CLAIM IN
COUNT VII OF SAMSUNG'S COUNTERCLAIMS
C-05-02298 RMW; C-05-00334 RMW
TSF 9
 Case 5:05-cv-00334-RMW Document 2058 Filed 08/18/2008 Page 10 of 13

1 counterclaim is a "claim for relief." Fed. R. Civ. P. 8(a). Samsung also argues that its unfair
2 competition claim is "more akin to a defense than an affirmative claim in the context of the license."
3 Opp'n at 15. Samsung's unfair competition counterclaim is an affirmative claim. It is not "akin to a
4 defense."
5 C. The Effect of the Release
6 Although judicial interpretations of general releases requires "the parties entering into a
7 settlement agreement to expressly reserve in the agreement any rights that they wish to maintain
8 beyond the date of the settlement of agreement" (Augustine Medical, Inc. v. Progressive Dynamics,
9 Inc., 194 F.3d 1367, 1373 (Fed. Cir. 1999)), there remains here a triable issue of fact concerning
10 what the parties intended to cover by the language "relating to or arising out of the subject matter of
11 this Agreement." The language is reasonably susceptible to different interpretations, and the court
United States District Court
For the Northern District of California

12 therefore denies Rambus's motion for summary judgment.

13 D. Implied Waiver
14 Rambus makes the alternative argument that Samsung waived any JEDEC-related 17200
15 claim when it successfully negotiated the 2001 Amendment with full knowledge of the Infineon
16 fraud verdict. Rambus contends that since Samsung took advantage of the verdict as a bargaining
17 tool to obtain a tremendous reduction in royalties owed or payable in the future, it waived its 17200
18 claim. Rambus relies primarily on Oakland Raiders v. Oakland-Alameda County Coliseum, 144
19 Cal. App. 4th 1175 (2006) in which the court of appeals reversed a judgment in favor of the Raiders,
20 which had sued the Coliseum for inducing the team to leave Los Angeles and come to Oakland by
21 misrepresenting the status of season ticket sales. The court held that the Oakland Raiders impliedly
22 waived its misrepresentation claim because it knew the status of the ticket sales when it renegotiated
23 the allegedly fraudulently induced contract, it did not mention the fraud and it obtained substantial
24 benefits as a result of the renegotiation. Id. at 1190-91.
25 As recognized by the California Court of Appeal, the Oakland Raiders case is an outlier
26 because whether a contract renegotiation waives a claim "is ordinarily a question of fact." Id. It is
27 only a question of law where "the underlying facts are undisputed or the evidence is susceptible of
28 PUBLIC REDACTED ORDER DENYING RAMBUS' MOTION FOR SUMMARY JUDGMENT ON THE JEDEC CLAIM IN
COUNT VII OF SAMSUNG'S COUNTERCLAIMS
C-05-02298 RMW; C-05-00334 RMW
TSF 10
 Case 5:05-cv-00334-RMW Document 2058 Filed 08/18/2008 Page 11 of 13

1 only one reasonable conclusion." Id. (internal citations omitted). In Oakland Raiders, the Raiders'
2 conduct in renegotiating the contract was "manifestly inconsistent with the intention to enforce a
3 known right." See id.
4 The record in this case is not free of disputes, and it is not so one-sided that it is "susceptible
5 of only one reasonable conclusion." For example, one of the decisive facts in Oakland Raiders was
6 that the Raiders renegotiated the contract and, after securing a better deal, sued on the prior
7 misrepresentation. This case is different because Samsung only brought its claim after Rambus
8 terminated the license. It bears noting that Rambus had also previously terminated the amended
9 agreement in 2005 and restored the parties' relationship to the terms of the original agreement. See
10 Rambus Inc. v. Hynix Semiconductor Inc., 2008 WL 2795135, *2 (N.D. Cal. Jul. 15, 2008). Nor was
11 Samsung's conduct manifestly inconsistent with the intention of enforcing the right. As noted,
United States District Court
For the Northern District of California

12 Rambus could terminate the amended agreement and the parties' agreements did not extend for the
13 life of the patents. As these exemplary distinctions indicate, this case is not Oakland Raiders. The
14 court cannot agree with Rambus that the factual issue of implied waiver can be determined here as a
15 matter of law. Accordingly, the court denies Rambus's motion regarding implied waiver.
16 III. ORDER
17 For the foregoing reasons, the court denies Rambus's motion for partial summary judgment
18 on Samsung's JEDEC-related unfair competition claim. An unredacted copy of this order will be
19 publicly filed within seven (7) days of the date of this order, absent a meritorious request by a party
20 that certain portions of the order be redacted from the publicly filed copy.2
21
22 DATED: 8/6/2008
RONALD M. WHYTE
23 United States District Judge
24
25
26
27 2
As of August 18, 2008, neither party requested that any portion of this order be redacted.
Accordingly, the court publicly files this order in its unredacted form.
28 PUBLIC REDACTED ORDER DENYING RAMBUS' MOTION FOR SUMMARY JUDGMENT ON THE JEDEC CLAIM IN
COUNT VII OF SAMSUNG'S COUNTERCLAIMS
C-05-02298 RMW; C-05-00334 RMW
TSF 11
 Case 5:05-cv-00334-RMW Document 2058 Filed 08/18/2008 Page 12 of 13

1 Notice of this document has been electronically sent to counsel in C-05-00334 & C-05-02298.
2
Counsel for Rambus Inc., all actions Counsel for Hynix entities, C-00-20905 and C-05-00334
3 Burton Alexander Burton.Gross@mto.com Allen Ruby ruby@allenrubylaw.com
Gross
4
Carolyn Hoecker carolyn.luedtke@mto.com Belinda Martinez Vega bvega@omm.com
5 Luedtke

6 Catherine Rajwani crajwani@sidley.com Daniel J. Furniss djfurniss@townsend.com

Craig N. Tolliver ctolliver@mckoolsmith.com Geoffrey Hurndall Yost gyost@thelenreid.com

7
David C. Yang david.yang@mto.com Jordan Trent Jones jtjones@townsend.com
8
Douglas A. Cawley dcawley@mckoolsmith.com Joseph A. Greco jagreco@townsend.com
9
Erin C. Dougherty erin.dougherty@mto.com Kenneth Lee Nissly kennissly@thelenreid.com
10
Gregory P. Stone gregory.stone@mto.com Kenneth Ryan korourke@omm.com
11 O'Rourke
United States District Court

Jennifer Lynn Polse jen.polse@mto.com Patrick Lynch plynch@omm.com

For the Northern District of California

12
Keith Rhoderic Dhu keith.hamilton@mto.com Susan Gregory svankeulen@thelenreid.com
13 Hamilton, II VanKeulen

14 Kelly Max Klaus kelly.klaus@mto.com Theodore G. Brown, III tgbrown@townsend.com

15 Miriam Kim Miriam.Kim@mto.com Tomomi Katherine tharkey@thelen.com

Harkey
16 Peter A. Detre detrepa@mto.com Counsel for Micron entities, C-06-00244
17 Pierre J. Hubert phubert@mckoolsmith.com Aaron Bennett Craig aaroncraig@quinnemanuel.com

18 Rosemarie Theresa rose.ring@mto.com David J. Ruderman davidruderman@quinnemanuel.com

Ring
19
Scott L Cole scole@mckoolsmith.com Harold Avrum Barza halbarza@quinnemanuel.com
20 Scott W. Hejny shejny@sidley.com Jared Bobrow jared.bobrow@weil.com
21 Sean Eskovitz sean.eskovitz@mto.com John D Beynon john.beynon@weil.com

22 Steven McCall steven.perry@mto.com Leeron Kalay leeron.kalay@weil.com

Perry
23
Thomas N Tarnay ttarnay@sidley.com Linda Jane Brewer lindabrewer@quinnemanuel.com
24 William Hans wbaumgartner@sidley.com Rachael Lynn Ballard rachaelmccracken@quinnemanuel.c
Baumgartner, Jr McCracken om
25
Robert Jason Becher robertbecher@quinnemanuel.com
26
Yonaton M yonirosenzweig@quinnemanuel.co
27 Rosenzweig m

28 PUBLIC REDACTED ORDER DENYING RAMBUS' MOTION FOR SUMMARY JUDGMENT ON THE JEDEC CLAIM IN
COUNT VII OF SAMSUNG'S COUNTERCLAIMS
C-05-02298 RMW; C-05-00334 RMW
TSF 12
 Case 5:05-cv-00334-RMW Document 2058 Filed 08/18/2008 Page 13 of 13

1 Counsel for Nanya entities, C-05-00334 Counsel for Samsung entities, C-05-00334 and C-05-
02298
2
Chester Wren-Ming Day cday@orrick.com Ana Elena Kadala anita.kadala@weil.com
3
Craig R. Kaufman ckaufman@orrick.co Claire Elise Goldstein claire.goldstein@weil.com
4 m

5 Glenn Michael Levy glevy@orrick.com David J. Healey david.healey@weil.com

Jan Ellen Ellard jellard@orrick.com Edward Robert Reines Edward.Reines@weil.com

6
Jason Sheffield Angell jangell@orrick.com Matthew D. Powers matthew.powers@weil.com
7
Kaiwen Tseng ktseng@orrick.com
8
Mark Shean mshean@orrick.com
9
Robert E. Freitas rfreitas@orrick.com
10 Vickie L. Feeman vfeeman@orrick.com
11
United States District Court
For the Northern District of California

12 Counsel for intervenor, Texas Instruments, Inc., C-05-00334

13 Kelli A. Crouch kcrouch@jonesday.com

14 Counsel for intervenor, United States Department of Justice, C-00-20905

Eugene S. Litvinoff eugene.litvinoff@usdoj.gov

15
May Lee Heye may.heye@usdoj.gov
16
Nathanael M. Cousins nat.cousins@usdoj.gov
17
Niall Edmund Lynch Niall.Lynch@USDOJ.GOV
18 Counsel for intervenor, Elpida Memory, Inc., C-00-20905 and C-05-00334
19 Eric R. Lamison elamison@kirkland.com

20 John J. Feldhaus jfeldhaus@foley.com

21 Counsel are responsible for distributing copies of this document to co-counsel that have not
registered for e-filing under the court's CM/ECF program in each action.
22
23 Dated: 8/18/2008 TSF
Chambers of Judge Whyte
24
25
26
27
28
PUBLIC REDACTED ORDER DENYING RAMBUS' MOTION FOR SUMMARY JUDGMENT ON THE JEDEC CLAIM IN
COUNT VII OF SAMSUNG'S COUNTERCLAIMS
C-05-02298 RMW; C-05-00334 RMW
TSF 13